With these judgments, the French High Court reconsiders its previous case law in the light of the ECJ’ case law and in particular the Daimler case (ECJ, 3 March 2016, C-179/15, points 26 and 27). The Court details its reasoning and states that: ‘the application for registration of a sign as a trade mark, even where it is granted, does not characterize use for goods or services, within the meaning of the case law of the ECJ, in the absence of any commencement of marketing of goods or services under the sign. Similarly, in such a case, no likelihood of confusion in the mind of the public and, consequently, no infringement of the essential function of the mark as an indication of origin is likely to occur" (No. 19-20.504 § 12, No. 19-20.959 § 14).
Thus, if the goods and services are not sold, the mere filing of a trademark cannot constitute an act of infringement, even if the sign has been registered.
1. This reversal of case law is welcomed as it is fully in line with the consistent case law of the European Union courts.
Prior to these decisions, the French High Court systematically considered that the filing of an infringing sign as a trademark constituted an act of infringement on its own, irrespective of its use (Cass.com, 26 November 2003, No. 01-11.784; Cass.com 10 July 2007, No. 05-18.571; Cass.com 21 February 2012, No. 11-11.752).
This position was criticized by the authors and was not in the line with some judgments of the courts of first instance.
For example, the Paris District Court considered in a judgment of 5 May 2009 that "it appears that a 2006 decision of the Court of First Instance of the European Communities considered that the act of filing is not an act of infringement, as for the national decisions if the act of filing is considered to constitute infringement, it must be noted that this act, which does not enter into the course of trade since it is not accompanied by any exploitation of the trademark, only gives rise to symbolic compensation”.
2. These judgments of 13 October 2021 will necessarily redirect this type of dispute to the French IP Institute, in particular by means of oppositions and cancellation actions, and no longer to the judicial courts.
3. Finally, this reversal should also have an impact on infringement litigation, and in particular on the calculation of damages, as the plaintiff will no longer be able to claim specific damages resulting from the sole filing of an infringing trademark by the defendant. In case of use of the infringing trademark in business, the damages will be calculated from the first actual act of exploitation and not from the filing date.